Choosing a Trademark Attorney

Trademark law is a niche area of law with many unique principles and requirements. Consequently, the service of an attorney who specializes in trademark law is required for many situations, such as to file a trademark application, evaluate a trademark search or trademark a product name.

Yet how should you choose a trademark attorney? To begin with, never pick your trademark attorney based solely upon a lawyer referral service or advertising. Lawyer referral services generally do not evaluate the abilities of the attorneys in their listings, but simply accept any attorney willing to pay the membership dues of that referral service. The referral service then refers clients to these "trademark attorneys" on a rotating basis. It is almost always the attorney's own subjective determination that he or she is a "trademark attorney," yet this attorney may have little experience and knowledge of trademark law.

Advertising is also a poor method for finding a trademark lawyer. Many trademark lawyers who extensively advertise run their practices like factories, with impersonal service and an army of paralegals preparing your trademark application. Instead, try to find a trademark attorney who provides individual attention to your trademark matters, including every aspect of trademark searching and trademark filing.

Seek a trademark attorney who is well-educated in trademark law and has extensive experience providing trademark assistance. Look for graduates of law schools that are renowned for their programs on intellectual property (trademark, copyright and patent law). In 2002, U.S. News & World Report rated the following law schools as having the best intellectual property programs:

University of California, Berkeley (Boalt Hall School of Law)

George Washington University

Franklin Pierce Law Center

New York University

University of Houston

Additionally, ask at what law firm the trademark attorney currently or formerly practiced. Law.com recently surveyed legal recruiters and determined that the five following law firms were the most prestigious law firms in the intellectual property practice area:

Cravath, Swain & Moore (New York City)

Wilson Sonsini Goodrich & Rosati (Palo Alto, CA)

Pennie & Edmonds, L.L.P. (New York City)

Cooley Godward, L.L.P. (Palo Alto, CA)

Kirkland & Ellis (Chicago)

Generally, the best trademark lawyers will be in large cities or in pockets of high technology such as Palo Alto, California.

Inquire whether your trademark lawyer has experience registering trademarks in your industry. For example, a software company would be better served by working with a trademark lawyer familiar with technically complex products and how to appropriately describe the software in a trademark application.

Once you choose a trademark attorney, make sure you receive the high level of trademark assistance you deserve. A good trademark attorney will:

1) Keep you informed of all major developments.

Whether it is examining a trademark search report, filing a trademark application, or defending you against a trademark infringement lawsuit, your trademark attorney should provide you updated information on the status of your trademark matters. For example, you should receive copies of a trademark search report conducted for you, copies of any correspondence to and from the United States Patent and Trademark Office, and copies of your trademark application or trademark registration. Registering A Trademark provides all of its clients with copies of important documents and promptly informs you of any changes in the status of your trademark application.

2) Quickly respond to your emails and phone calls.

Many trademark lawyers, particularly those with a legion of paralegals preparing trademark applications, will neglect to personally answer their client's questions. Seek to find a trademark lawyer who is genuinely concerned about your trademarks and works to successfully ensure that your trademark applications mature to trademark registrations. Ask whether your trademark application and correspondence to the United States Patent and Trademark Office will be prepared by the trademark attorney or instead by one of his or her employees.

3. Let you determine what trademark you will select.

The role of a trademark attorney is to examine the risks involved in using a particular trademark slogan or trademark logo and determine the likelihood of your trademark application becoming a registered trademark. Whatever trademark you choose to select is your decision and is generally based upon marketing goals. Often a client will seek to register a trademark that is risky to use or hard to register because the trademark is ideal for advertising. A trademark attorney examines a trademark search and provides a risk analysis, but the decision of how to proceed belongs to the client.